DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Application Status
This action is responsive to the claims filed 2 January 2026.
Claims 1-5, 7, 9-10, 12-19, and 21-24 are currently pending and being examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1: last two lines recite “thereby remaining the head of the driving member protruding outwards form the surface of the workpiece”, is unclear because the clause starts with “remaining” but does not have what is remaining before the word. Examiner suggests amending the claim to say “thereby the head of the driving member remains protruding outwards form the surface of the workpiece”.
Claim 21: last two lines recite “a lower end of the driver in the driving direction remains protruding outwards from a surface of the workpiece”, is unclear because the driver does not protrude outward from a workpiece, it protrudes from the tool. Examiner is unsure how to interpret this limitation because the driver never protrudes from the workpiece.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5, 7, 9-10, 12-16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2009/0101690) in view of Mikat-Stevens (US 2020/0246949), further in view of Meyer (US 2022/0234186).
Claim 1: Kubo teaches a driving tool (1-fig.1) comprising:
a driver (¶[0031]) configured to drive a driving member in a driving direction (¶[0031]);
a driver guide (8-fig.6) configured to guide a movement of the driver (¶[0030]-[0031]);
a contact arm (9-fig.4) configured to slidably couple to the driver guide (¶[0036]-[0037]); and
an adapter (17-fig.2) configured to be detachably attachable to the contact arm, the adapter having a lower end (¶[0037]), wherein
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the adapter includes a guide piece (E-annotated fig.2) that extends upward to the contact arm in a cantilevered manner (see annotated fig.2 showing E extending upwards in a cantilevered manner),
the adapter attached to the contact arm is configured such that a length in the driving direction between a head of the driving member driven by the driver and a surface of a workpiece into which the driving member is driven by the driver is equal to or less than a length of a protruding portion of a lower end of the adapter from a lower tip end of the contact arm (see fig.5 showing that the nail is capable of being equal to or less than the length; ¶[0043]; Examiner notes that the driving member and the workpiece are not a part of the electric driving tool and are intended use and functional language), thereby remaining the head the head of the driving member protruding outwards form the surface of the workpiece (This limitation is functional language, therefore the tool merely needs to be capable of performing the function. The electric driving tool and adapter are capable of operating in this manner, due to the adapter extending beyond the contact arm.).
Kubo does not teach the driving tool is electric.
However, Mikat-Stevens teaches the driving tool is electric (¶[0032]).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to modify the device of Kubo, by having the driving tool be electrically, gas spring-powered, as taught by Mikat-Stevens, as a well-known equivalent driving mechanism known in the art. (Mikat-Stevens ¶[0003]).
Kubo as modified by Mikat-Stevens does not expressly teach a rail, and a hook that inwardly protrudes from the guide piece to the rail and is engageable with an upper end of the rail, the adapter attached to the contact arm by an engagement of the hook with the upper end of the rail.
However, Meyer teaches a rail (44-figs.3-4,6B), and a hook (at least 66,77-fig.6B) that inwardly protrudes from the guide piece (60-fig.6B) to the rail and is engageable with an upper end of the rail (see fig.7C showing 66,77,60 engaged with 44), the adapter attached to an arm by an engagement of the hook with the upper end of the rail (see fig.7C showing 66,77,60 engaged with 44).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to modify the device of Kubo and Mikat-Stevens, by having a hook on the adapter, as taught by Meyer, to ensure that the adapter is securely attached to the nail gun and won’t fail off during operation of the tool
Kubo as modified by Mikat-Stevens and Meyer further teaches:
Claim 2: Kubo as modified by Mikat-Stevens and Meyer does not explicitly teach the lower end of the adapter that attaches to the contact arm is configured to protrude from a tip end of the contact arm by 5mm to 20mm in the driving direction.
However, it would have been obvious to one of ordinary skill in the art at the filing date of the invention to have the lower end of the adapter that attaches to the contact arm is configured to protrude from a tip end of the contact arm by 5mm to 20mm in the driving direction, since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141. Further, in re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). See MPEP 2144.04(IV)(A).
Claim 3: The electric driving tool according to claim 1, wherein the lower end of the adapter (Kubo: 17-fig.3) has an arc shape or a U shape when being viewed in the driving direction (Kubo: A-annotated fig.2 showing there are two separate U-shapes viewed in the driving direction).
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Claim 4: The electric driving tool according to claim 3, wherein an inner circumference of the lower end (Kubo: B,C-annotated fig.2) of the adapter has a side that is opened (Kubo: B-annotated fig.2) and three sides (Kubo: C-annotated fig.2) when being viewed in the driving direction.
Claim 5: The electric driving tool according to claim 1, wherein,
the adapter includes a main body (Kubo: D-annotated fig.3) having the lower end (Kubo: B,C-annotated fig.3), and
the main body of the adapter positioned below the tip end (Kubo: 13-fig.3) of the contact arm (Kubo: 9-fig.3) in the driving direction has substantially a same sectional shape as the lower end in a direction perpendicular to the driving direction (Kubo: see annotated fig.3 showing B,C and 13 have substantially the same sectional shape).
Claim 7: The electric driving tool according to claim 6, wherein,
the main body of the adapter has an arc shape or a U shape when being viewed in the driving direction (Kubo: A-annotated fig.2 showing there are two separate U-shapes viewed in the driving direction), and
the main body is thicker than the guide piece in cross section perpendicular to the driving direction (Kubo: see figs.3-4 showing 17 cross section is thicker than 9).
Claim 9: The electric driving tool according to claim 1, further comprising:
a piston configured to connect to the driver (Mikat-Stevens: ¶[0031]);
a cylinder (Mikat-Stevens: 18-fig.1) configured such that the piston is movable within the cylinder (Mikat-Stevens: ¶[0031]); and
a motor (Mikat-Stevens: 38-fig.1) that is configured to move the driver in a direction opposite to the driving direction to increase a gas pressure in the cylinder (Mikat-Stevens: ¶[0031]-[0032]).
Claim 10: The electric driving tool according to claim 4, wherein,
the driver (Mikat-Stevens: 22-fig.4) has a rectangular shape when being viewed in the driving direction (Mikat-Stevens: see fig.4 showing 22b has a rectangular cross-section),
the driver guide (Kubo: 9-fig.6) has a rectangular shape to surround the driver when being viewed in the driving direction (Kubo: see fig.6 showing 9 has a substantially rectangular shape), and
the lower end of the adapter includes the three sides (Kubo: C-annotated fig.2) for following a shape of the driver guide for the adapter to surround the driver guide when being viewed in the driving direction (Kubo: see fig.4 showing that C follows the shape of 9 and surrounds 9).
Claim 12: Kubo as modified by Mikat-Stevens does not explicitly teach the lower end of the adapter is configured to protrude from the tip end of the contact arm by 10mm to 15mm in the driving direction.
Therefore, it would have been obvious to one of ordinary skill in the art at the filing date of the invention to have the lower end of the adapter is configured to protrude from the tip end of the contact arm by 10mm to 15mm in the driving direction, since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141. Further, in re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). See MPEP 2144.04(IV)(A).
Claim 13: The electric driving tool according to claim 1, wherein the length between the head of the driving member driven by the driver and the surface of the workpiece is 10mm to 15mm (Kubo: Examiner notes that the driving member and the workpiece are not a part of the electric driving tool and are intended use and functional language. The tool of Kudo is capable of operating in this manner).
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Claim 14: The electric driving tool according to claim 7, wherein the main body (Kubo: G,H,I-annotated fig.2) of the adapter includes a front wall (Kubo: G-annotated fig.2), a right wall (Kubo: H-annotated fig.2), a left wall (Kubo: I-annotated fig.2), a pair of base portions (Kubo: J-annotated fig.2); one of the pair of base portions (Kubo: J-annotated fig.2) is connected to an upper end of the right wall (Kubo: see annotated fig.2 showing J and H are connected) and the other to an upper end of the left wall (Kubo: see annotated fig.2 showing I and H are connected).
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Claim 15: The electric driving tool according to claim 14, wherein the guide piece (Kubo: E-annotated fig.2) is configured to extend from each of the base portions (Kubo: J-annotated fig.2) in the cantilevered manner (Kubo: see annotated fig.2 showing E extending from J in a cantilevered manner).
Claim 16: The electric driving tool according to claim 14, wherein the pair of base portions are formed asymmetrically in a right-left direction (Kubo: see annotated fig.2 showing only the left side of the J has an opening at 21, therefore asymmetrical in a right-left direction).
Claim 18: The electric driving tool according to claim 14, wherein the front wall includes an engagement portion (Kubo: 22-fig.2) that is engageable with an upper tip end the contact arm (Kubo: ¶[0039]).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2009/0101690) in view of Mikat-Stevens (US 2020/0246949) and Meyer (US 2022/0234186), further in view of Takeno (US 2021/0291336).
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Claim 17: Kudo as modified by Mikat-Stevens and Meyer teaches the electric driving tool according to claim 14, wherein the guide piece has an elongated hole (Kudo: 21-fig.2) extending longitudinally from an adjoining area (Kudo: annotated fig.2) of the base portion to an adjoining area of an upper end of the guide (Kudo: annotated fig.2).
Kudo as modified by Mikat-Stevens does not explicitly teach an elongated hole on each of the pair of base portions.
However, Takeno teaches an elongated hole (118-fig.3) on each of the pair of base portions (106-fig.3; ¶[0029]).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to modify the device of Kubo and Mikat-Stevens, by having a retaining member on both sides of the adapter, as taught by Takeno, to ensure secure attachment between the tool and adapter by having both sides of the adapter engaged with the tool, preventing the adapter from accidently falling off during operation of the tool.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2009/0101690) in view of Mikat-Stevens (US 2020/0246949) and Meyer (US 2022/0234186), further in view of Tse (US 2022/0184786).
Claim 19: Kubo as modified by Mikat-Stevens and Meyer teaches the electric driving tool according to claim 14.
Kubo does not teach the front wall includes a rib-shaped first indicator that protrudes frontward and extends in an up-down direction to indicate a position of the driving member in a right-left direction, and each of the right wall and the left wall includes a rib-shaped second indicator that respectively protrudes rightward and leftward and extends in the up-down direction to indicate a position of the driving member in a front-rear direction.
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However, Tse teaches the front wall (annotated fig.3) includes a rib-shaped first indicator (19-fig.3) that protrudes frontward and extends in an up-down direction to indicate a position of the driving member in a right-left direction (¶[0030]), and
each of the right wall (annotated fig.3) and the left wall (annotated fig.3) includes a rib-shaped second indicator (19-fig.3) that respectively protrudes rightward and leftward and extends in the up-down direction to indicate a position of the driving member in a front-rear direction (¶[0030]).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to modify the device of Kubo, by adding a rib-shaped indicator, as taught by Tse, so the visual guides help the operator align the tool with where the nails are supposed to be placed. (Tse ¶[0030])
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kubo (US 2009/0101690).
Claim 21: Meyer teaches a driving tool (1-fig.1) comprising:
a driver (¶[0031]) configured to drive a driving member in a driving direction (¶[0031]);
a driver guide (8-fig.6) configured to guide a movement of the driver (¶[0030]-[0031]);
a contact arm (9-fig.4) configured to slidably couple to the driver guide (¶[0036]-[0037]); and
an adapter (17-fig.2) configured to be detachably attachable to the contact arm, the adapter having a lower end (¶[0037]),
wherein the adapter (17-fig.2) that attaches to the contact arm is configured to protrude from the contact arm in the driving direction (see fig.4 showing 17 protruding from 9).
Claim 24: Kubo teaches the driving tool according to claim 21, wherein the driving tool is an electro-pneumatic type driving tool (¶[0033]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2009/0101690) in view of Shkolnikov (US 2008/0251567).
Claim 22: Kubo teaches the driving tool according to claim 21.
Kubo does not expressly teach the lower end of the driving member is positioned between the lower end of the adapter and a lower end of the contact arm when driven into the workpiece.
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However, Shkolnikov teaches the lower end (B-annotated fig. 5) of the driving member (A-annotated fig. 5) is positioned between the lower end (D-annotated fig. 5) of the adapter (C-annotated fig. 5) and a lower end (F-annotated fig. 5) of the contact arm (E-annotated fig. 5) when driven into the workpiece (¶[0020]).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to modify the device of Kubo, by the adjustable device, as taught by Shkolnikov, so the depth can be adjusted easily for various jobs without needing a whole other tool.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubo (US 2009/0101690).
Claim 23: Kubo teaches the driving tool according to claim 21,
Kubo does not explicitly teach the lower end of the adapter is configured to protrude from the tip end of the contact arm by 10mm to 15mm in the driving direction.
Therefore, it would have been obvious to one of ordinary skill in the art at the filing date of the invention to have the lower end of the adapter is configured to protrude from the tip end of the contact arm by 10mm to 15mm in the driving direction, since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also In re Yount (36 C.C.P.A. (Patents) 775, 171 F.2d 317, 80 USPQ 141. Further, in re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). See MPEP 2144.04(IV)(A).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the arguments do not apply to the reference being used in the current rejection. Applicant has amended claim 1, therefore Kubo in view of Mikat-Stevens is not relied upon for teaching the newly added subject matter of claim 1. Please see the new grounds for rejection above, using Kubo in view of Mikat-Stevens and Meyer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATIE L GERTH whose telephone number is (303)297-4602. The examiner can normally be reached Monday-Thursday 9am-4pm (CT).
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/KATIE L GERTH/Examiner, Art Unit 3731
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731